Wednesday, 06 May 2015

Interstate Trademark Disputes in Practice

The recent trademark dispute between the University of Texas (UT) and Virginia Commonwealth University involving the trademark for ‘havoc’ highlights the issue of trademark disputes across state lines. By way of background, when Virginia Commonwealth University’s (or VCU) head basketball coach left to accept the same position at the University of Texas, the University of Texas, via its Board of Regents, filed Intent to Use trademark applications with the United States Patent and Trademark Office (USPTO) for ‘Horns Havoc’ as well as ‘House of Havoc’. This raised eyebrows within the trademark community, media in Virginia and Austin, Texas, as well as between the two schools. VCU, as the first to make use of the Havoc mark in connection with various apparel and other items, arguably had a claim of trademark infringement. Interestingly, VCU had not applied for, let alone registered a trademark for ‘Havoc’ with the United States Patent and Trademark Office. Instead, they had relied upon a state trademark.

While the University of Texas in Austin has since abandoned its trademark applications, the question becomes why didn’t VCU pursue the USPTO Trademark as opposed to its state level trademark? While a federal trademark requires use of the mark in interstate commerce, a state trademark typically relates to intrastate commerce and there is little doubt that VCU had used ‘Havoc’ in connection with goods and other services throughout the country. This was especially the case given the recent success of the VCU basketball team under Smart. Regardless, should a dispute have continued between VCU and UT? Not having a federal trademark registration may have compromised some of the presumptions and availability of damages available in federal court for VCU.

In practice, a state trademark doesn’t offer much more than common law trademark rights. Common law trademark rights simply mean that the first user of a distinctive mark in a particular geographical location has rights to that mark. The reason, among others, for pursuing a federal trademark with the United States Patent and Trademark Office is to get nation-wide priority over any subsequent user of a mark that creates a likelihood of consumer confusion, so long as the applicant has used the mark in interstate commerce. There is no requirement that use in interstate commerce means use in each and every state. Therefore, we always recommend a trademark applications with the United States Patent and Trademark Office when the mark is used in interstate commerce or intended to be used in interstate commerce. Had VCU done so, it is likely that even if UT had wanted to maintain its trademark applications, they would have been refused registration by the USPTO in light of the existing registration owned by VCU.

Ultimately, this is but one recent example that highlights the importance of understanding the best way to secure your trademark rights, file for registration in furtherance of those rights and ultimately enforcing those rights utilizing those all important registrations, namely federal trademark registrations. Whether it be an Austin, Texas trademark attorney or a trademark lawyer in Virginia, they would likely agree.

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